Ex Parte NAMBIAR et al

Patent Trial and Appeal Board

Oct 16, 2018

12482149 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/482,149 06/10/2009
74739 7590 10/18/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
Shibhu NAMBIAR
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2011-0 l 86USO 1 6591
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/18/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIBHU NAMBIAR and SUMAN GURA
Appeal 2017-005451 1
Application 12/482,1492
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
BART A. GERSTENBLITH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3, 4, 7-10, 15, 16, and 25-28. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
November 8, 2016) and Reply Brief ("Reply Br.," filed February 14, 2017),
and the Examiner's Answer ("Ans.," mailed December 14, 2016) and Final
Office Action ("Final Act.," mailed June 9, 2016).
2 Appellants identify Oracle International Corporation as the real party in
interest. App. Br. 3.
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Application 12/482,149
CLAIMED INVENTION
Appellants' claimed invention relates to "a computer system for
managing documents, and more particularly, to a computer system for
managing purchase documents" (Spec. ,r 1 ).
Claims 1 and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A non-transitory computer readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to manage purchase documents, the
managmg compnsmg:
receiving a request to modify a first purchase document
having an active status;
importing contents of the first purchase document into a
second purchase document that is a change order object that
inherits data, attributes, and entities from the first purchase
document;
receiving modifications to the second purchase document
including a new value for at least one attribute;
transmitting, over a network, a request to approve the
modified second purchase document to a supplier;
receiving, over the network, an invoice from the supplier;
receiving, over the network, approval of the modified
second purchase document from the supplier;
implementing the approved modifications to the second
purchase document by:
replacing the corresponding contents of the first
purchase document with the approved modifications to the
second purchase document, or
replacing the first purchase document with the
approved modified second purchase document, the status
of the first purchase document remaining active until
approval of the modifications is received, and
while the status of the first purchase document is active
and modifications to the second purchase document are being
made, validating the invoice received from the supplier using the
first purchase document.
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REJECTIONS
Claims 1, 3, 4, 7-10, 15, 16, and 25-28 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 1, 3, 4, 7-10, 15, 16, and 25-28 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over King et al. (US 2002/0152133 Al,
pub. Oct. 17, 2002) ("King").
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
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"'transform the nature of the claim' into a patent-eligible application." Id.
( quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under § 101, the Examiner determined
that the claims are directed to "managing purchase documents," which the
Examiner determined is a method of organizing human activity, i.e., creating
a contractual relationship between a buyer and a seller, and, therefore, an
abstract idea (Final Act. 2). The Examiner also determined that the claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception (id. at 2-3).
Appellants argue that "'managing purchase documents' is a concept
that has not been identified as an abstract idea by the courts" and that "a
comparison of 'managing purchase documents' to the abstract ideas
identified by the courts shows that there are no similarities" (App. Br. 8).
Yet, we agree with the Examiner that managing purchase documents, as
recited in the claims, amounts to the creation of a contractual relationship
between a buyer and a seller (Final Act. 2). And, as Appellants
acknowledge, "this abstract idea was identified by the Federal Circuit in
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buySAFE, Inc. v. Google Inc., [7]65 F.3d 1350 (Fed. Cir. 2014)" (App.
Br. 9).
Appellants note that, in buySAFE, the Federal Circuit cited a legal
article to establish that the idea recited in the claims was a fundamental
economic practice (id.). And Appellants ostensibly maintain that the
Examiner is likewise required to cite authority here in order to establish that
"managing purchase documents" is an abstract idea (id. at 1 O; see also id.
at 8 ("[T]he [F]inal Office Action has declined to follow the methodology
provided by the Court, which offered citations to textbooks and articles to
establish that the identified abstract idea of 'managing purchase documents'
was, indeed, a fundamental economic practice or a method of organizing
human activity.")).
Appellants' argument is not persuasive. There is no requirement that
an examiner provide evidentiary support in every case before a conclusion
can be made that a claim is directed to an abstract idea. Nor, contrary to
Appellants' suggestion (id. at 10), did this Board hold in Ex parte Renald
Poisson, Appeal 2012-011084 (PTAB Feb. 27, 2015), that there is any such
requirement. 3 Although evidence may be helpful, e.g., where facts are in
dispute, it is not always needed. See Mortgage Grader, Inc. v. First Choice
Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir. 2016) ("[I]t is also
possible, as numerous cases have recognized, that a § 101 analysis may
sometimes be undertaken without resolving fact issues."). Appellants' bare
assertion that evidence is needed, without any supporting reasoning, is
3 We would not be bound, in any event, by a non-precedential decision of
another panel of the Board.
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insufficient to require the Examiner to provide evidentiary support, 4
particularly where, as here, Appellants explicitly acknowledge that the
Federal Circuit has previously identified the "creation of a contractual
relationship between a buyer and a seller" as an abstract idea.
It also is significant here that although the claims recite the use of a
processor, i.e., a computer, the underlying processes recited in independent
claims 1 and 15, including, for example, receiving a request to modify a first
purchase document, importing the contents of the first purchase document
into a second purchase document, receiving modifications to the second
purchase document, and implementing the approved modifications, are all
acts that could be performed by a human, without the use of a computer.
Appellants argue that the claimed method cannot be performed entirely in
the human mind (see Reply Br. 4; see also App. Br. 12). Yet, Appellants
cannot reasonably deny that the claimed method could be performed by a
human, manually, e.g., using pen and paper. For example, a person, using
pen and paper, could generate a request to modify a first purchase document
and communicate this information via written communications; approvals
for any such modifications could similarly be communicated via written
communications. The contents of the first purchase document also could be
manually copied into a second purchase document and the corresponding
contents of the first purchase document manually replaced with approved
modifications to the second purchase document. And a human could
maintain the active status of the first purchase document until after any
4 We note that Appellants have put forward no rebuttal evidence showing
the claims are not directed to an abstract idea.
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modifications are approved and could validate the invoice using the
purchase document.
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. See CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011)
("[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under§ 101."); Gottschalk v. Benson,
409 U.S. 63, 67 (1972) ("Phenomena of nature ... , mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work."). Additionally, mental processes remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. CyberSource, 654 F .3d
at 1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
We also cannot agree with Appellants that there is any parallel
between the present claims and the claims in McRO that the court
determined were not directed to an abstract idea. Appellants argue that their
claims, like those in McRO,
recite an improvement to computer-related purchase document
management technology by allowing the performance of a
function not previously performable by a computer, i.e.,
validating the invoice received from the supplier using the first
purchase document while the status of the first purchase
document is active and modifications to the second purchase
document are being made
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(App. Br. 13). But, Appellants do not identify any specific rules that enable
the computer to manage purchase documents in the same way the specific
rules enabled the computer in McRO to generate the computer animated
characters. We also find no evidence of record here to support the argument
that the present situation is like the one in McRO where computers were
unable to make certain subjective determinations, i.e., regarding morph
weight and phoneme timings, which could only be made prior to the claimed
invention by human animators.
The '576 patent, at issue in McRO, 5 describes that, prior to the
claimed invention, character animation and lip synchronization were
accomplished by human animators, with the assistance of a computer, and
involved the use of a so-called "keyframe" approach in which animators set
appropriate parameters, i.e., morph weights, at certain important times, i.e.,
"keyframes," in order to produce accurate and realistic lip synchronization
and facial expressions. McRO, 837 F.3d. at 1305. Animators knew what
phoneme a character pronounced at a given time from a time-aligned
phonetic transcription (a "timed transcript"). Id. In accordance with the
prior technique, animators, using a computer, thus, manually determined the
appropriate morph weight sets for each keyframe based on the phoneme
timings in the timed transcript. Id.
In McRO, the improvement in computer animation was realized by
using "rules, rather than artists [i.e., human animators], to set the morph
weights and transitions between phonemes" (id. at 1313), i.e., in McRO, the
invention used "rules to automatically set a keyframe at the correct point to
5 U.S. Patent No. 6,307,576.
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depict more realistic speech, achieving results similar to those previously
achieved manually by animators." Id. at 1307. The rules in McRO, thus,
allowed the computer to produce accurate and realistic synchronization in
animated characters that could only previously be produced by humans. We
are not persuaded that any comparable situation is presented here.
We also are not persuaded of Examiner error to the extent that
Appellants argue that the claims are patent-eligible because the claims do
not preempt an abstract idea (App. Br. 13-14).
There is no dispute that the Supreme Court has described "the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ f]or this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
Turning to the second step of the Mayol Alice framework, Appellants
argue that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because "the claims recite 'significantly more'
than merely requiring 'generic computer implementation' of an alleged
abstract idea"' (App. Br. 14). But, to the extent Appellants maintain that the
claimed invention is patent-eligible, i.e., that the claims amount to
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"significantly more" than an abstract idea, because the claims are allegedly
novel and/or non-obvious in view of the prior art (see App. Br. 15 ("More
specifically ... the claims are allowable over the prior art, meaning all of the
pending claims now recite an inventive concept per Step 2B, as discussed in
[BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016))]), Appellants misapprehend the controlling
precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice
Corp., 134 S. Ct. at 2355. "Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188-89 (1981) ("The 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1, 3, 4, 7-10, 15, 16, and 25-28 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
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Obviousness
Independent Claim 1 and Dependent Claims 3, 4, and 7-10
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because King does
not disclose or suggest "while the status of the first purchase document is
active and the modifications to the second purchase document are being
made, validating the invoice received from the supplier using the first
purchase document," as recited in claim 1 (App. Br. 15-17).
The Examiner interprets the argued limitation to refer to "review of an
invoice against a purchase document that is undergoing a change order
process, potentially as a result of a supplier sending a partial shipment"
(Final Act. 8). And the Examiner takes the position that because the system
supports multiple ordering, "it is obvious that a receipt for a partial shipment
would be received and compared against a first order while a change to the
order is being processed" (id.). In this regard, the Examiner notes that King
discloses a scenario, at paragraph 134, where the supplier proposes a partial
delivery on the requested date and a second delivery later in time (id.). And
the Examiner concludes, "[t]hus the partial shipment will be reviewed and
the buyer can initiate a change order relating to the second delivery (for
example, perhaps prior to the time of the second delivery the buyer needs
additional material and therefore initiates a change order)" (id.).
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). The Examiner has not
established here that a person of ordinary skill in the art would have had an
apparent reason, in view of King, to validate an invoice received from the
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supplier using a first purchase document while the status of the first
purchase document is active and modifications to a second purchase
document are being made. Instead, the Examiner has provided mere
speculation to that effect, and such speculation is not a sufficient basis for a
prima facie case of obviousness. See, e.g., In re Warner, 379 F.2d 1011,
1017 (CCPA 1967).
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reason, we
also do not sustain the rejection of dependent claims 3, 4, and 7-10.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
Independent Claim 15 and Dependent Claims 16 and 25-28
Independent claim 15 includes language substantially similar to the
language of claim 1, and stands rejected based on the same rationale applied
with respect to claim 1 (Final Act. 6-8). Therefore, we do not sustain the
rejection under 35 U.S.C. § 103(a) of independent claim 15, and claims 16
and 25-28, which depend therefrom, for the same reason set forth above
with respect to claim 1.
DECISION
The Examiner's rejection of claims 1, 3, 4, 7-10, 15, 16, and 25-28
under 35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1, 3, 4, 7-10, 15, 16, and 25-28
under 35 U.S.C. § 103(a) is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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